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The America Invents Act (also referred to as the “Patent Reform Act of 2011”) was enacted September 16, 2011. To help you understand the timing of when various provisions
of the Act take place, we’ve reviewed the 37 proposed changes to patent law and
created a listing by date, below. (Note: we haven’t included many of the technical
or relatively unimportant changes—for example, renaming the Detroit Patent
Library—but you can read the full list of changes here.). After each section, we have included a
cross-reference to the relevant sections from the Act.

Changes That Takes Place Immediately (Upon
Enactment)

Tougher
to obtain inter partes re-exam. It will be harder to obtain patent
re-examination. (The Director can only authorize a re-exam if “there is a
reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.”) And there will be no more
federal court review of USPTO re-examinations. (Sec. 6).

Easier
for prior users to defend. If you’re sued for infringement but you were
commercially using the patented technology more than one year before the filing
date of the claimed invention, you have a defense against a claim that you infringed
(although that defense doesn’t invalidate the patent). The Act includes a
definition of “commercial use.” (Sec. 5).

Goodbye
to tax strategy patents. The USPTO will stop granting patents for
strategies for reducing, avoiding, or deferring tax liability.

Goodbye
best mode defense. Accused patent infringers often use the “best mode
defense” in which they argue that the patent holder failed to disclose the best
mode of carrying out the invention. The best
mode defense will no longer be available in cases filed afterenactment. (Sec. 15);

Hello
virtual website marking. Virtual marking—the process of using a publicly
accessible website to provide a link between a patented invention and its
patent number—shall be considered as sufficiently providing public notice for
that patent. This change will apply to
all cases filed including cases pending at the time of enactment. (Sec. 16).

Harder
to go after false markers. It has become common practice for parties to bring
a lawsuit claiming (or making a counter claim) that an invention is falsely
marked, especially if the mark exists on copies of the invention after the
patent has expired. The Act provides that privately filed false marking claims
(those claims not brought by the government) will require proof of competitive
injury. Marking with the number of a patent that covered that product but has
expired will no longer be considered false marking. This provision will apply
to all cases filed including cases pending at the time of enactment. (Sec. 16(b)).

New
rules when joining defendants. Joinder of unrelated accused infringers will
be limited in actions commenced on and after enactment (Sec. 19(d)), and

No
patenting humans. Issuance of patent claims directed to or encompassing a
human organism will be barred as of enactment. (Sec. 33).

10 Days after Enactment (September 26, 2011)

Paying
for being prioritized. There’s a $4,800 fee for filing a prioritized
application. Small entities pay only $2,400. (Sec.
11(h)).

60 Days after Enactment (November 16, 2011)

The
Luddite penalty. A new $400 fee ($200 for small entities) must be paid by those
applicants who do not file utility patent applications electronically. (Sec.
10(b)).

12 months after enactment (September 16, 2012)

The
Inventor’s Oath/Assignment. The Act modifies certain requirements regarding
the oath or declaration required of an inventor. If an inventor has assigned (or
is obligated to assign) an invention, the assignee can file the application for
the patent. (Sec. 4).

Narrows
post-grant reviews. The Act provides that inter-partes hearings after a
patent has been issued are now limited to challenges for novelty and nonobviousness—that
is to issues relating to Sections 102 and 103 of the patent law. Such claims can
only be based on prior art consisting of patents and printed publications and
must be filed 9 months after the patent issued.
This provision also establishes many additional technical and procedural
rules for post-grant reviews, generally making it more difficult to bring
post-grant reviews. For example, it prohibits a post-grant review and inter
partes review if the party filing has filed a related civil action before
filing the petition. (Sec. 6).

Changes
to Patent Trial and Appeal Board. The Act sets forth new rules about the Board
and provides for appeals to the Court of Appeals for the Federal Circuit (CAFC)
from certain Board decisions. (Sec. 7)

Submitting
“Gotcha” documentation. Prior to the USPTO’s granting of a patent, the Act
allows a third party to submit relevant publications for the patent examiner to
consider (commonly referred to as preissuance submissions). (Sec. 8).

Patent
owner’s right to supplemental exam. The Act establishes a system of
supplemental examinations for a patent owner “to consider, reconsider, and
correct information believed to be relevant to the patent.” (Sec. 12)

A
new look at business patents. The Act requires the Director to establish a
transitional post-grant review proceeding to consider the validity of
business-method patents. (Sec. 18)

18 months after enactment (March 16, 2013)

First
to file; not first to invent. Patents filed 18 months after enactment will
be subject to new first-to-file and prior art rules, effectively ending
centuries of first-to-invent rules. The current one-year on sale bar—that
permits sale or disclosure of the claimed invention less than one year before
filing—is terminated, although the Act establishes a limited one-year grace period if the
inventor (or anyone who obtained the subject matter from the inventor) made
certain disclosures of the claimed
invention. The novelty and nonobviousness sections of the patent law (Sections
102 and 103) are amended and existing provisions relating to inventions made
abroad and statutory invention registration are terminated. (Sec. 3).

New
rules for fighting earlier effective patent filing. The Act permits a
patent owner to bring a “derivation hearing” at the USPTO (replacing
interference proceedings) against another patent owner claiming to have the
same invention and who has an earlier effective filing date. The derivation
hearing must be filed within a 1-year period beginning on the date of the first
publication of a claim in the earlier filed application. Alternatively, the
owner of a patent may sue the owner of another patent that claims the same
invention and has an earlier effective filing date. These lawsuits can only be
brought if the invention claiming priority was derived directly from the person
seeking relief. (Sec. 3).